Jackson National Life Insurance Company v. E-Promote/ JACKSONNATIONALLIFEINSURANCE.COM

Case No. D2007-0027

1. The Parties

The Complainant is Jackson National Life Insurance Company, of Lansing, Michigan, United States of America, represented by Butzel Long, United States of America.

The Respondent is E-Promote/ c/o JACKSONNATIONALLIFEINSURANCE.COM, of San Francisco,
California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <jacksonnationallifeinsurance.com> is registered
with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2007. The Complainant named as Respondent “JACKSONNATIONALLIFEINSURANCE.COM” being the entity listed as registrant in the whois. On January 11, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On January 11 and on January 12, 2007, Dotster, Inc. transmitted by email to the Center its verification response stating that since the disputed domain name was transferred to Dotster, Inc, on April 4, 2006, the registrant of the domain name has been E-Promote, and that the listing shown in the public whois database utilizes a privacy service; also provided were the contact details for the administrative, billing, and technical contact for the registrant E-Promote. In response to an email communication from the Center naming E-Promote as Respondent, the Complainant filed an amendment to the Complaint on January 17, 2007, naming E-Promote as Respondent. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2007.

The Center appointed John R. Keys, Jr. as the sole
panelist in this matter on February 16, 2007. The Panel finds that it was properly
constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.

4. Factual Background

The Complainant is engaged in the business of insurance and investment-related services. It owns the following trademarks registered on the Principal Register of the United States:

Complainant also provides annuity underwriting and financial investment services under these marks.

Complainant offers the services identified to the Jackson National marks on the Internet, using the domain name <jnl.com>.

The domain name < jacksonnationallifeinsurance.com>, which was created
on April 10, 2004, resolves to a website that provides links to entities apparently
selling life insurance underwriting services, among other things.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name at issue is identical or confusingly similar to trademarks in which the Complainant has rights. Complainant owns a family of marks beginning with the words “JACKSON NATIONAL” for insurance and investment-related services. Complainant has used the Jackson National marks in commerce with respect to the identified services since at least April 13, 1961.

Complainant is aware of no other entity, in or out of the United States, offering similar or related services under a company name, trade name, or service mark beginning with or prominently featuring the words “JACKSON NATIONAL.”

No registered or pending mark beginning with or prominently featuring the words “JACKSON NATIONAL” appears on the online database of the U.S. Patent & Trademark Office except those belonging to Complainant. Complainant is aware of no registration for any mark beginning with or prominently featuring the words “JACKSON NATIONAL” on the registry of any other country.

Respondent’s domain name begins with the words “Jackson National,” which are also the first words in all of the Complainant’s marks. Respondent’s domain name also includes the words “life insurance,” which appear in the Jackson National marks and describe the primary service identified to all of the Jackson National marks.

Respondent presents its domain name at the top of its website home page in a prominent manner, constituting a trademark use of JACKSON NATIONAL.

Taken as a whole, Respondent’s domain name, <jacksonnationallifeinsurance.com>, is confusingly similar to the JACKSON NATIONAL marks as to sight, sound, and meaning.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name. Respondent is not making a legitimate noncommercial or fair use of the domain name, but intends to misleadingly divert consumers for commercial gain. By clicking on the various links on Respondent’s website, the user is directed to a page of links to other life insurance company websites. Thus, Respondent’s website is commercial in nature. By clicking on the links “Life Insurance” and “Whole Life Insurance,” for example, the user is directed to pages of links for websites operated by other life insurance companies. None of these other companies is Complainant.

Respondent’s use of the <jacksonnationallifeinsurance.com> domain name is calculated to mislead consumers who may be trying to reach Complainant instead to reach Respondent’s website, where those consumers will be misdirected to Complainant’s competitors in a manner that commercially benefits Respondent.

Finally, Complainant contends that the domain name was registered and is being used in bad faith. By using its domain name, Respondent has intentionally attempted to attract Internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s JACKSON NATIONAL marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s
contentions.

6. Discussion and Findings

Because Respondent did not respond to the Complaint, the Panel first addresses the question of whether Respondent has been given adequate notice of the proceeding. The evidence of record indicates that the Center sent the Complaint by courier service to the address shown in the registration data, as required. The evidence also shows that the Center sent the Complaint in electronic form to the e-mail addresses required under paragraph 2(a)(ii) of the Rules. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.

The Panel is further satisfied that the appropriate Respondent in these proceedings is the entity identified by the registrar as the current registrant, namely E-Promote, and subsequently named as such by the Complainant in the amended Complaint. For avoidance of doubt, it is convenient to refer to this entity (as referred above) as “E-Promote/ c/o JACKSONNATIONALLIFEINSURANCE.COM”, and subsequently, simply as “Respondent”.

Where the respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate.”

Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:

(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) Respondent’s Domain Name has been registered and is being used in bad faith.

The Panel considers each element in order.

A. Identical or Confusingly Similar

The Complainant possesses established rights in the trademarks JACKSON NATIONAL, JACKSON NATIONAL LIFE, and JACKSON NATIONAL LIFE INSURANCE COMPANY. The Panel finds the domain name <jacksonnationallifeinsurance> is confusingly similar to the Complainant’s marks.

“The intentional registration of a domain name
knowing that the second level domain is another company’s valuable trademark
weighs in favor of likelihood of confusion”. Brookfield Communications,
Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1059 (9th
Cir. 1999). Respondent’s domain name incorporates the words “Jackson
National,” common to all three of Complainant’s marks, into its
domain name in their entirety and with correct spelling. In addition, Respondent’s
domain name incorporates the word “life,” which is common to two
of Complainant’s marks, and the word “insurance,” which is
part of one of Complainant’s marks. The Panel notes also that Respondent
is likely to have had at least constructive knowledge of Complainant’s
registered trademarks, Microsoft Corporation v. Cupcake City, WIPO
Case No. D2000-0818, and there is a strong inference that Respondent’s
use of Complainant’s marks in the domain name was intentional. See
Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO
Case No. D2000-0003.

The addition of the generic descriptive words “life
insurance”, or “insurance”, to the words “Jackson National”
does not obviate or lessen the likelihood of confusion. As has often been said
in these cases, “Generally, a user of a mark may not avoid likely confusion
by appropriating another’s entire mark and adding descriptive or non-distinctive
matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair
Competition § 23:50 (4th ed. 2005). See General Electric Company v. CPIC
NET and Hussain Syed, WIPO Case No. D2001-0087.
The principle that likelihood of confusion cannot be avoided by the addition
of descriptive content has been found to include the addition of entire words
to a famous trademark. See The Coca-Cola Company v. Gamlebyen Invest AS,
WIPO Case No. D2000-1677 (“Coca
Cola” and “cocacoladrinks” held confusingly similar); America
Online. Inc. v. Anson Chan,WIPO Case
No. D2001-0004, citing Sporty’s Farm LLC. v. Sportsman’s
Market. Inc., 202 F. 3d 489, 497-98 (2d. Cir. 2000); Yahoo, Inc. v. CPIC
NET and Syed Hussain, WIPO Case No. D2001-0195;
America Online, Inc. v. Yeteck Communication, Inc., WIPO
Case No. D2001-0055 (“aolcasino” found confusingly similar to
AOL mark).

Similarly, the deletion of the generic word “company” does not render the domain name less confusingly similar to the Complainant’s JACKSON NATIONAL LIFE INSURANCE COMPANY mark.

An Internet user searching for Complainant’s company, products or services would likely be confused by Respondent’s domain name to think that he/she was being directed to Complainant’s website where he/she could obtain information about or possibly purchase Complainant’s products, which is completely untrue. Indeed, the domain name suggests a sponsorship of or affiliation with Complainant’s company which do not in fact exist.

The Panel concludes that the domain name at issue is confusingly similar to trademarks in which the Complainant has established rights.

B. Rights or Legitimate Interests

Complainant must establish that Respondent has no rights or legitimate interests in the domain name. Policy, paragraph 4(a)(ii) of the Policy. As a practical matter, this element places some burden on the Respondent to come forward with evidence demonstrating its rights and legitimate interests, if any, and Respondent, in default here, does nothing to take up that burden.

There is no evidence that Respondent is commonly known by the domain name, that it was authorized or licensed by Complainant to use its trademark in the domain name or that it is making a legitimate noncommercial or fair use of the domain name. See paragraphs 4(c)(ii) and (iii) of the Policy.

The evidence of record is sufficient for the Panel to infer that Respondent
is not using the domain name in connection with a bona fide offering
of goods or services. See Policy, paragraph 4(c)(i) of the Policy. The Panel
considers that the Respondent in all likelihood knew of the JACKSON NATIONAL
trademarks before registering the domain name at issue and consciously chose
to use that mark in launching its website. See Pfizer Inc. v. NA, WIPO
Case No. D2005-0072. The unlawful use of another’s trademark cannot
be considered bona fide, i.e. in good faith, with respect to an offering
of goods or services. Alta Vista Company v. James A. Maggs, NAF Case
No. FA0095545 (2000). Respondent’s taking Complainant’s trademark
to create a false impression of an association with Complainant does not give
Respondent a legitimate interest in the mark. See Telstra Corp. Ltd. v. Nuclear
Marshmallows, WIPO Case No. D2000-0003.

Finally, the fact that Respondent’s website also advertises and contains
links to other sites that promote insurance and financial products that appear
to compete with those offered by the Complainant further diminishes any bona
fides of Respondent’s offering using the JACKSON NATIONAL trademark.
See Pfizer Inc. v. NA, WIPO Case No. D2005-0072;
Pfizer Inc. v. The Magic Islands, WIPO
Case No. D2003-0870.

Based on the evidence, the Panel concludes that Respondent is not using its domain name in connection with a bona fide offering of goods and that it does not have rights to or legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Finally, Complainant must show that Respondent both registered and is using the domain name in bad faith, see paragraph 4(a)(iii) of the Policy.

There is substantial authority that registration of a domain name that is confusingly
similar to a famous trademark by any entity that has no relationship to that
mark is itself sufficient evidence of bad faith registration and use. Sporty’s
Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000);
Pfizer Inc. v. NA, WIPO Case No. D2005-0072;
AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,
WIPO Case No. D2002-0440; America Online,
Inc. v. Anson Chan, WIPO Case No. D2001-0004;
Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163 (use of a name
connected with such a well-known product by someone with no connection with
the product suggests opportunistic bad faith). Respondent here either knew or
ought to have known of Complainant’s trademarks when it used them in registering
a domain name it would then use to sell, or help others sell, products unrelated
to Complainant or Complainant’s products. The Panel considers that Respondent
likely registered its domain name, appropriating Complainant’s trademarks,
in order to suggest to the Internet user a connection between Complainant and
its products and Respondent’s product line which simply does not exist.
This is misleading and supports a finding of bad faith registration. See
Pfizer Inc. v. NA, WIPO Case No. D2005-0072.

Respondent is also using the domain name in bad faith. Under paragraph 4(b)(iv)
of the Policy, bad faith use of a domain name exists where the name is intentionally
used to attract Internet users to a website, for commercial gain, by creating
a likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of the website or of the products promoted
on the website. See Casio Keisanki Kabushiki Kaisha v. Jongchan Kim, WIPO
Case No. D2003-0400. Respondent here uses the JACKSON NATIONAL marks to
draw users to its website where it then leads users to other sites which are
in fact unrelated to Complainant or Complainant’s products and some of
which offer products or services that compete with those of the Complainant.
See Pfizer Inc. v. NA, WIPO Case No. D2005-0072;
Pfizer Inc. v. The Magic Islands, WIPO
Case No. D2003-0870; Downstream Technologies, LLC v. Bartels System GmbH,
WIPO Case No. D2003-0088. Respondent clearly
is creating and intending to exploit the likely confusion arising from its use
of Complainant’s trademarks to attract Internet users to its website for
its own commercial gain.

The Panel thus concludes that Respondent both registered and is using the domain
name <jacksonnationallifeinsurance.com> in bad faith and that Complainant
has established the third and final element of its case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <jacksonnationallifeinsurance.com> be transferred to the Complainant.